Pictometry wins patent case

Pictometry International Corp. announced a significant win in the re-examination proceedings instituted by GEOSPAN Corp. against Pictometry's U.S. Patent No. 7,424,133 entitled "Method and Apparatus for Capturing, Geolocating and Measuring Oblique Images." On February 2, 2009, the U.S. Patent Office upheld the validity of priority ownership to the inventive concepts claimed within Pictometry's patent thereby rejecting recent allegations made by GEOSPAN Corp. Furthermore, the Patent Office held that the majority of GEOSPAN claims are without substantive merit.

GEOSPAN has been repeatedly chastised by the Patent Office for failing to follow the correct procedures, including incorrect filings and failing to properly pay the required maintenance fees on its own patent.

This Patent Office ruling follows on the heels of GEOSPAN’s two declaratory actions being summarily dismissed in a lawsuit they filed against Pictometry last year. The dismissals were the first of their kind to occur in the nation since the Supreme Court changed the standards last year. As a result of the dismissals by the Court, Pictometry’s patent is no longer under challenge.

"The patent upon which Pictometry’s technology is built has withstood every challenge it has faced," said Dick Kaplan, President and CEO of Pictometry.

Background
In response to an inquiry Pictometry sent to GEOSPAN regarding a product it was marketing to customers in the U.S., on March 20, 2008 GEOSPAN filed a declaratory judgment action in the U.S. District Court of Minnesota that it did not infringe Pictometry’s U.S. Patent No. 5,247,356 (‘356 Patent). GEOSPAN also alleged that if it did indeed infringe the ‘356 Patent, that the ‘356 Patent be held invalid and unenforceable. GEOSPAN finally included a claim that Pictometry infringes GEOSPAN’s U.S. Patent No. 5,633,946. On August 7, 2008, the Minnesota court summarily dismissed GEOSPAN’s declaratory judgment actions thereby removing Pictometry’s patent from challenge. The Court’s dismissal of GEOSPAN’s actions was the first of its kind following the Supreme Court’s revisions to the declaratory judgment standards in 2007.

As part of a second issue, on November 11, 2008, GEOSPAN filed an action with the U.S. Patent Office for re-examination of Pictometry’s U.S. patent 7,424,133 alleging that some of the issued claims were invalid, due to a dispute over Pictometry’s priority claim on the technology. On February 2, 2009, the U.S. Patent Office upheld the validity of Pictometry’s claims to the priority of the inventive concepts claimed and further found that the majority of GEOSPAN’s claims were without substantive merit.

Pictometry’s primary U.S. Patent -- the ‘356 Patent -- predates the patent GEOSPAN sued Pictometry by more than three years and is unaffected and unchallenged by either of GEOSPAN’s actions.